A Blogging Experiment by Zvi S. Rosen – All views are my own. Those who do not remember IP history are doomed to relitigate it.

Hillary Clinton, IP Attorney

One little-remarked aspect of the current presidential election is that Hillary Clinton may be the first IP lawyer to be elected President of the United States. This aspect of her biography isn’t generally discussed, but sources indicate that her practice during her 18 years at the Rose Law Firm in Arkansas was focused on intellectual property law.

This is borne out in the reported cases where Secretary Clinton served as counsel. Of the five cases where she is listed as counsel of record in the written decision, three concern trademark law (the other two are contract disputes). Interestingly, trademark law is the only major area of intellectual property not discussed in her Initiative on Technology & Innovation.

Tortious interference in sliced bread, in a case where keeping the trademarks and parties straight can be a challenge. Hillary Clinton served as lead counsel for Holsum Baking Co., a Arkansas bakery. W.E. Long owned the rights to the Holsum brand nationwide, and from 1944-1946 had licensed the mark “Holsum” to Holsum Baking for exclusive use in the Pine Bluff, AR territory. Although Holsum Baking joined the rival QBA baking cooperative in 1946, they continued to use the Holsum mark in conjunction with QBA’s Sunbeam mark for decades.

In 1986 Holsum Baking began marketing a wheat bread under the Holsum brand without any use of the Sunbeam brand. Following negotiations with W.E. Long, Long did not sue for trademark infringement, but instead contacted Holsum Baking’s packaging suppliers and convinced them to cease supplying branded packaging materials to Holsum Baking. Holsum Baking then sued, arguing that W.E. Long had tortiously interfered with their contractual relations.

As the above narrative suggests, although the case was not per se a trademark case, Holsum Baking’s claim was premised on the assertion that they had acquired the Holsum trademark in the Pine Bluff region at common-law, and that W.E. Long had abandoned it in the region by allowing Holsum Baking to use the mark for over forty years. The Arkansas Supreme Court upheld the trial Court’s finding that W.E. Long had tortiously interefered in Holsum Baking’s contractual relations.

Hillary Clinton served as counsel to the plaintiff Maybelline, although it seems likely she was serving in more of a local counsel role, while Weil Gotshal in New York served as primary counsel. In fact, some of the testimony in this case was taken by closed-circuit television from New York. Maybelline claimed that Cover Girl Clean Lash mascara, made by Noxell, was being falsely marketed as being waterproof, and requested a preliminary injunction under section 43(a) of the Lanham Act and under Arkansas unfair competition law to prevent Noxell from marketing the mascara as waterproof while the suit was ongoing.

Maybelline had retained an independent research firm, which found that Clear Lash was in fact not waterproof, a finding that the Court found credible. Finding that Maybelline’s market share was being negatively impacted by the false claims regarding Cover Girl mascara, the interests of the public of not being falsely advertised to, and finding that the harm to Noxell would not be excessive, the court preliminary enjoined Noxell from advertising the product as waterproof or shipping further packages making claims of being waterproof. However, the Court did not order a recall of existing packaging.

On appeal, the suit was dismissed the following year when the 8th Circuit Court of Appeals reversed a separate trial court order denying a motion to dismiss the case for lack of venue in Arkansas. Hillary Clinton was not listed as of counsel in the appeal to the 8th Circuit.

Hillary Clinton was among the lawyers serving as local counsel to First Nationwide Bank, in its claim that an Arkansas savings and loan was engaged in trademark infringement by marketing itself as Nationwide Savings. At trial, the Court found that the Arkansas S&L had renamed itself to trade on the goodwill of First Nationwide, and its use of the name Nationwide was likely to cause confusion among the public. After a series of mergers, First Nationwide Bank is now part of Citigroup.

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Author: Zvi S. Rosen

Lawyer and sometimes academic. I've written a fair deal about the evolution of intellectual property law into its present form, this blog is a way to share things that don't fit into a full-length article.
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